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1 IP Checklist davies.com.au

2 Introduction Commercialising ideas and developing a business requires consideration of intellectual property laws. If you don t you might be wasting money or risking the very life of your business. The following points are a general guide for some of the more important considerations.

3 Patents (and designs) Have you considered if you have any inventions? Have you filed patent applications to protect your inventions prior to: 1. Disclosing the invention to any member of the public; 2. Launching a website online; 3. Selling or exploiting the invention; 4. Entering into commercial negotiations regarding the invention; 5. Publishing the invention online, in journals or magazines; 6. Using the invention secretly for commercial gain. If you are aware of a similar product have you had searches performed to ascertain if the product is protected by a patent? If you are aware of a relevant patent have you obtained a patent infringement and validity opinion? Prior to, or shortly after, filing a patent application have you considered performing international novelty searches as an indication of the likelihood of your patent application being accepted? These considerations also apply in relation to designs and design registrations. If you have one or more patents or patent applications, have you marked your website, products and literature with the relevant patent numbers?

4 Trade Marks A trade mark is a sign that distinguishes your goods and services from those of another business. Slogans, logos, package shapes, colours and even smells can be registered as trade marks. Have you filed trade mark applications in relation to goods or services offered by your company? Have you conducted trade mark clearance searches before adopting a new trade mark, domain name or business name prior to using your trade mark, e.g. before your website goes live? If you have trade marks, have you: 1. Properly marked references to your trade mark, eg., ; 2. Used your trade mark as an adjective; 3. Initiated a trade mark watching service to detect applications for trade marks that are similar to your trade mark.

5 Trade Secrets Trade secrets relate to any confidential business information, including manufacturing and industrial secrets. It s the secret business know how that gives a business its competitive edge. Have you: 1. Had employees/contractors sign a written agreement relating to the proper handling of confidential information; 2. Had a non-disclosure agreement signed before providing confidential information to a third party; 3. Marked all confidential documents/software files with a confidential notice; 4. Restricted access to confidential documents/ software files.

6 Copyright Copyright is a form of intellectual property that is based on a person s skill and labour in creating a copyright work. Copyright gives the creator of an original work the exclusive right to reproduce the work, use it commercially and be attributed as its creator. Have you: 1. Used a copyright notice for each work (including your website, database content, source code, advertisements); 2. Archived a dated copy of each version of the work; 3. Obtained a written ownership assignment from contractors for works attracting copyright; 4. Considered registering copyright where available, e.g. in the United States or Canada.

7 DOMAIN NAMES Domain names are unique addresses necessary to connect to the Internet, which substitute not so easily remembered numerical IP addresses. They can be used to host websites and can also be used for addresses. Have you considered: 1. Performing a trade mark clearance search in each country of interest prior to selecting your domain name; 2. Registering each generic top level domain version (e.g..com,.net, etc.) and geographic country code top level domain version (e.g..com.au,.co.nz,.co.uk) for each country of interest. For an existing domain name have you registered a trade mark that is identical to your second level domain name.

8 ADVERTISEMENTS If your website includes third party advertisements, do you have a contract with advertisers protecting you if the advertisements: 1. Are misleading or deceptive; 2. Infringe another party s intellectual property rights; 3. Contain defamatory materials.

9 LEGAL NOTICES Have you considered inclusion of the following notices on your website: 1. Copyright notice; 2. Trademark notice, e.g., ; 3. Granted patent and patent application numbers; 4. Acknowledgment of a third party trademark; 5. Restrictions on the use of the webpage content; 6. Software license and consent check before allowing software to be downloaded; 7. Disclaimers to limit liability from any errors; 8. Privacy notice.

10 WEBSITE OWNERSHIP If a contractor developed your website, have you obtained written confirmation of: 1. Ownership of any copyright material; 2. Warranties for third party copyright infringement allegations; 3. Confidentiality agreement before disclosing confidential business information to the contractor. If your website includes content owned by a third party, have you obtained: 1. A licence from the third party to use the content; 2. Warranties for other party s copyright infringement allegations. If your website includes a third party trade mark, and you use the trade mark commercially, have you obtained a licence from the third party to use the trade mark in all countries where your website can be accessed?

11 GENERAL Intellectual property is the result of intellectual endeavours and is capable of being protected by legal rights. It includes patents, trade marks, designs, copyright and trade secrets. These are intangible property rights that can be bought or sold, licensed and enforced, just like other forms of property rights. Have you: 1. Implemented a system for identifying, obtaining, maintaining and enforcing IP rights generated by your company; 2. Executed IP ownership agreements with all employees, consultants, contractors, joint venture partners, etc.; 3. Performed periodic market searches for infringement of your IP assets; 4. Performed periodic valuations of your IP assets; 5. Implemented a system to identify potential licensees of your IP assets to generate additional revenue; 6. Considered patent insurance to protect against the costs of patent infringement litigation.

12 davies.com.au This chart serves as a guide only and does not detail all events which can occur. Precise advice should be sought from your attorney at all times. Copyright 2013 Davies Collison Cave, all rights reserved.

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